In Re: Lemay , 660 F. App'x 919 ( 2016 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: STEPHEN O. LEMAY, MICHAEL MATAS,
TIMOTHY P. OMERNICK, RICHARD WILLIAMSON,
IMRAN CHAUDHRI, CHARLES J. PISULA,
MARCEL VAN OS,
Appellants
______________________
2015-1973
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 11/968,067.
______________________
Decided: September 19, 2016
______________________
MARK S. DAVIES, Orrick, Herrington & Sutcliffe LLP,
Washington, DC, argued for appellants. Also represented
by E. JOSHUA ROSENKRANZ, MARC SHAPIRO, SARAH M.
STERNLIEB, New York, NY; DONALD E. DAYBELL, Irvine,
CA; CATHY C. SHYONG, Menlo Park, CA; BRIAN B. HO,
PETER J. YIM, Morrison & Foerster LLP, San Francisco,
CA.
PHILIP J. WARRICK, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA,
argued for appellee Michelle K. Lee. Also represented by
THOMAS W. KRAUSE, BRIAN RACILLA.
______________________
2 IN RE: LEMAY
Before NEWMAN, MOORE, and WALLACH, Circuit Judges.
Opinion for the court filed by Circuit Judge WALLACH.
Dissenting opinion filed by Circuit Judge MOORE.
WALLACH, Circuit Judge.
Appellants Stephen O. Lemay and others (collectively,
“Lemay” or “Appellants”), inventors at Apple Inc., 1 appeal
the Final Written Decision of the United States Patent
and Trademark Office’s (“USPTO”) Patent Trial and
Appeal Board (“PTAB”), which affirmed in part an exam-
iner’s rejection of all claims of U.S. Patent Application
Publication No. 2008/0320391 (the “Lemay application”).
We reverse.
BACKGROUND
Appellants are the named inventors of the Lemay ap-
plication, which is generally directed to a method of
streaming online videos to a portable device. The applica-
tion contains six independent claims (1, 2, 29, and 31–33)
that each recite, among other things, a touch screen and a
graphical user interface that displays “a first list of in-
formation about online video items.” See, e.g., J.A. 985
(claim 1). Representative2 claim 1 recites:
1 Apple Inc. is the real party in interest.
2 As will be explained more fully below, a claim is
considered representative when the arguments presented
in support of that claim before the PTAB apply to other
claims grouped with the representative claim, and all
claims argued with a representative claim rise and fall
based on the representative claim. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2012) (“For each ground of rejection
applying to two or more claims, the claims may be ar-
gued . . . as a group (all claims subject to the ground of
rejection rise and fall together) . . . .” (emphasis added)).
IN RE: LEMAY 3
A method, comprising:
at a portable electronic device with a touch screen
display:
displaying, on the touch screen display of the
portable electronic device, a first list of infor-
mation about online video items in a plurality of
lists of information about online video items;
displaying, on the touch screen display of the
portable electronic device, a plurality of icons cor-
responding to at least some of the plurality of lists
of information about online video items;
in response to detecting a moving finger gesture on
the first list of information about online video
items, scrolling the first list of information about
online video items on the touch screen display of
the portable electronic device;
in response to detecting a tap gesture on a first
portion of a row in the first list of information
about online video items, wherein the row con-
tains information about a particular online video
item:
initiating a request for the particular online video
item from a remote computer, receiving the par-
ticular online video item, and playing the particu-
lar online video item;
in response to detecting a finger gesture on a sec-
ond portion of the row in the first list of infor-
mation about online video items, wherein the
second portion of the row is different from the first
portion of the row, displaying, on the touch screen
display of the portable electronic device, addition-
al information about the particular online video
item; and
4 IN RE: LEMAY
in response to detecting a finger gesture on a re-
spective icon in the plurality of icons, displaying,
on the touch screen display of the portable elec-
tronic device, a corresponding list of information
about online video items.
J.A. 15–16 (emphases added). 3
A USPTO examiner rejected claims 1–33 as obvious
over various combinations of U.S. Patent No. 7,739,271
(“Cook”) and U.S. Patent Application Publication No.
2007/0024646 (“Saarinen”). 4 The PTAB affirmed the
rejections of claims 1–9 and 12–33, but reversed the
rejections of claims 10–11. Lemay appeals the PTAB’s
decision as to claims 1–9 and 12–33. This court has
jurisdiction under 28 U.S.C. § 1295(a)(4)(A) (2012).
3 Since filing the Lemay application in December
2008, claims 1–33 have been amended on multiple occa-
sions. See J.A. 11–14 (PTAB Docket Sheet listing the
parties’ filings, including those related to amendments),
500, 510–11 (Lemay’s comments regarding amendments).
For ease of reference, the court refers to the amended
claims as argued before the PTAB. See J.A. 15–23 (Ap-
pendix providing amended claims that “will replace all
prior versions, and listings, of claims in the application”).
4 The USPTO also referenced U.S. Patent Applica-
tion Publication Nos. 2007/0229465 (“Sakai”) and
2007/0064619 (“Bettis”) as prior art, but Sakai and Bettis
are not central to this appeal.
IN RE: LEMAY 5
DISCUSSION
I. Standard of Review and Legal Standard for Obvious-
ness
The USPTO may not issue a patent “if the differences
between the subject matter sought to be patented and the
prior art are such that the subject matter as a whole
would have been obvious at the time the invention was
made to a person having ordinary skill in the [relevant]
art . . . .” 35 U.S.C. § 103(a) (2006). 5 “The [USPTO] bears
the initial burden of showing a prima facie case of obvi-
ousness.” In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir.
2014) (citation omitted). The ultimate determination of
obviousness is a question of law, but that determination is
based on underlying factual findings. See In re Gartside,
203 F.3d 1305, 1316 (Fed. Cir. 2000). The underlying
factual findings include (1) “the scope and content of the
prior art,” (2) “differences between the prior art and the
claims at issue,” (3) “the level of ordinary skill in the
pertinent art,” and (4) the presence of secondary consider-
ations of nonobviousness, such as “commercial success,
long felt but unsolved needs, [and] failure of others.”
Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18
(1966). If “a prima facie case of obviousness is made, the
burden then shifts to the applicant to come forward with
evidence and/or argument supporting patentability.”
Gianelli, 739 F.3d at 1379 (citation omitted).
We review the PTAB’s factual determinations for sub-
stantial evidence and its legal determinations de novo.
5 Congress amended § 103 when it enacted the
Leahy–Smith America Invents Act (“AIA”). Pub. L. No.
112-29, § 3(c), 125 Stat. 284, 287 (2011). However, be-
cause the Lemay application was filed before March 16,
2013, the pre-AIA § 103 applies. See id. § 3(n)(1), 125
Stat. at 293.
6 IN RE: LEMAY
Gartside, 203 F.3d at 1316. “Substantial evidence is
something less than the weight of the evidence but more
than a mere scintilla of evidence.” In re Kotzab, 217 F.3d
1365, 1369 (Fed. Cir. 2000) (citation omitted). It is “‘such
relevant evidence as a reasonable mind might accept as
adequate to support a conclusion.’” In re Applied Materi-
als, Inc., 692 F.3d 1289, 1294 (Fed. Cir. 2012) (quoting
Consol. Edison Co. v. N.L.R.B., 305 U.S. 197, 229 (1938)).
II. No Substantial Evidence Supports the PTAB’s Deter-
mination that Cook and Saarinen Teach the Subject
Elements of Claim 1
The PTAB found that certain elements of claim 1 of
the Lemay application would have been obvious over Cook
and Saarinen. See J.A. 5–6. When no substantial evi-
dence supports the PTAB’s findings, we may reverse its
findings without remanding the matter. See, e.g., Arendi
S.A.R.L. v. Apple Inc., No. 2015-2073, 2016 WL 4205964,
at *9 (Fed. Cir. Aug. 10, 2016) (reversing the PTAB’s
determination that adding a search for phone numbers to
a text recognition program would have been obvious
because the PTAB’s decision was “conclusory and unsup-
ported by substantial evidence”); Giannelli, 739 F.3d at
1380 (reversing affirmance of examiner’s rejection where
the PTAB’s analysis “contained no explanation why or
how a person having ordinary skill in the art would
modify” the prior art to arrive at the claimed invention).
The instant appeal warrants reversal.
Lemay argues that no evidence demonstrates that
Cook and Saarinen teach the three disputed elements of
claim 1. Although the USPTO attempts to identify record
evidence in support of the PTAB’s findings, 6 its argu-
6 In its Final Written Decision, the PTAB adopted
the examiner’s findings as to claim 1, see J.A. 6–7 (“We
find that the evidence of record supports the [e]xaminer’s
IN RE: LEMAY 7
ments are unpersuasive. We agree with Lemay that no
substantial evidence supports the PTAB’s findings as to
two of these three elements in claim 1, but we find that
Lemay waived its arguments as to the third. We discuss
each in turn.
A. No Substantial Evidence Supports the PTAB’s Finding
that Cook and Saarinen Teach an Icon and “A Corre-
sponding List of Information”
First, Lemay asserts that Cook does not teach the el-
ement recited in the final clause of claim 1, which re-
quires that “in response to detecting a finger gesture on a
respective icon in the plurality of icons, displaying, on the
touch screen display of the portable electronic device, a
corresponding list of information about online video
items.” J.A. 16 (emphases added). Lemay explains that
this clause can be understood by reference to Figure 5A of
the Lemay application, which is reproduced below:
finding th[at] Saarinen’s touch screen and finger gestures
(see, e.g., Saarinen ¶¶ 37, 43), combined with Cook’s icons
and plurality of lists of information (see [J.A. 867 (Cook
fig.3B)]), renders obvious the disputed [elements] of claim
1.”), and the USPTO has overstated the examiner’s find-
ings in its brief. Although we refer to the USPTO’s sup-
porting arguments, we review the examiner’s findings as
adopted by the PTAB.
8 IN RE: LEMAY
J.A. 959 (Lemay application fig.5A). Figure 5A illustrates
a touch screen display that allows users to click on the
bottom row of icons to generate a list of “featured,” “most
viewed,” or “bookmark[ed]” video titles. J.A. 959.
According to Lemay, those categories (i.e., “featured,”
“most viewed,” “bookmark[ed],” etc.) represent the “plu-
rality of icons” recited in claim 1 of the Lemay application.
J.A. 16. For example, when a user taps a finger on the
“most viewed” category, the screen will display “a list of
‘most viewed’ video titles along with other information
about each online video item.” Appellants’ Br. 23. The
resulting list of video items can be seen in Figure 5A as
“Pokemon theme music,” “SNL—Digital Short,” etc. See
J.A. 959 (Lemay application fig.5A). The tapping of the
user’s finger and the resulting display of video titles and
associated information illustrate, according to Lemay, the
two elements of (1) “a finger gesture on a respective icon
IN RE: LEMAY 9
in the plurality of icons” and (2) “a corresponding list of
information about online video items,” respectively. J.A.
16, 959.
The USPTO argues that substantial evidence sup-
ports the PTAB’s finding that Cook teaches these ele-
ments (in combination with Saarinen, which teaches a
touch screen and finger gestures). The PTAB adopted the
examiner’s finding that Cook teaches user queries entered
into an Internet search engine, J.A. 671, which generates
“a listing of album covers and links to listen to a music
sample from three different albums,” J.A. 874. In sup-
port, the USPTO contends that a user may click any of
Cook’s “Listen!” icons (i.e., “links to listen,” J.A. 874),
which it says correspond to Lemay application claim 1’s
“plurality of icons.” Upon clicking one of these icons (i.e.,
“a finger gesture on a respective icon in the plurality of
icons,” J.A. 959), a media player appears that “displays
various lists of information corresponding to the selected
media sample” (i.e., “a corresponding list of information,”
J.A. 959). Appellee’s Br. 25–26; see J.A. 671–72, 676
(examiner’s findings that the media samples are “a corre-
sponding list of information”). According to the USPTO,
the “list of information about online video items” corre-
sponds to the icon clicked by the user and comprises the
album “tracks,” along with other information. See Appel-
lee’s Br. 26; see also J.A. 672 (examiner’s finding that
songs can be “video items”).
The USPTO’s reasoning is flawed. The final clause of
claim 1 in the Lemay application recites “in response to
detecting a finger contact on a respective icon in the
plurality of icons, displaying . . . a corresponding list of
information about online video items.” J.A. 16 (emphases
added). The claim earlier provides the antecedent basis
for “the plurality of icons” and their corresponding lists of
information when it recites (1) “displaying . . . a first list
of information about online video items in a plurality of
lists of information about online video items” and
10 IN RE: LEMAY
(2) “displaying . . . a plurality of icons corresponding to at
least some of the plurality of lists of information about
online video items.” J.A. 15 (emphases added). The
USPTO argues that
each of the three album covers and “Listen!” links
represent icons, and each list of information about
the online media sample—album title (e.g.[,] “I
Wanna Be With You”), artist name (e.g., “Mandy
Moore”), release date (e.g., “May 9, 2000”), and
price (e.g., “$12.99”)—corresponds to those icons.
Appellee’s Br. 22 (emphases added). However, if the “list
of information” corresponding to an icon is represented by
album titles, artist names, and release dates generated as
the results of the search query, the same list cannot also
be represented elsewhere as a list of track titles. These
are different lists.
For these reasons, we conclude that no substantial ev-
idence supports the PTAB’s finding that Cook, in combi-
nation with Saarinen, discloses clicking an icon to produce
the recited “corresponding” list of information.
B. No Substantial Evidence Supports the PTAB’s Finding
that Cook and Saarinen Teach a “First List of Information
About Online Video Items”
The first clause of claim 1 recites “displaying . . . a
first list of information about online video items in a
plurality of lists of information about online video items.”
J.A. 15 (emphasis added). Lemay asserts that the use of
the word “items” indicates that “the first list of infor-
mation must be about multiple online video items.”
Appellants’ Br. 25. The USPTO states that Lemay’s
argument “misses the mark” because the “sample(s)”
illustrated in Cook Figure 3B are the “items” referred to
in claim 1, and the “list of information” corresponding to
these items is the list of search results illustrated in
Figure 3B. Appellee’s Br. 32 (emphasis omitted).
IN RE: LEMAY 11
The USPTO’s position regarding “items” contradicts
its position regarding “lists of information.” Earlier in its
brief, the USPTO contends that each of the three sets of
title, artist, and price information identified in Cook
Figure 3B is one of the “lists of information.” See, e.g.,
Appellee’s Br. 22–23 (where the USPTO “borrow[s] the
annotations from [Lemay’s] brief,” but omits the rectangu-
lar annotation boxes surrounding the names of the
“items”). Comparing Lemay’s brief to the USPTO’s re-
veals this discrepancy:
Compare Appellants’ Br. 20 (left, reproducing and anno-
tating a portion of J.A. 867 (Cook fig.3B)), with Appellee’s
Br. 23 (right, reproducing and annotating a portion of J.A.
867 (Cook fig.3B)). As can be seen from these illustra-
tions, Lemay’s annotated version of Cook Figure 3B
contains rectangles around “Mandy More,” “I Wanna Be
With You,” and “Now That’s What I Call Music! 4,” i.e.,
around the “items” referred to in the claim. Appellants’
12 IN RE: LEMAY
Br. 20. In contrast, the USPTO’s version omits these
rectangles, noting that “the green boxes [i.e., the larger
rectangles surrounding the title, artist, and price infor-
mation] indicate the ‘plurality of lists of information.’”
Appellee’s Br. 23. According to the USPTO, each of the
three sets of title, artist, and price information is one of
the “lists of information.” Id. at 22–23. The USPTO
confirms this understanding when it states that
“Cook . . . explains that the results display includes a
listing of information that correlates to each album cover:
the price of the album and ‘other purchasing infor-
mation.’” Id. at 24 (emphases added) (quoting J.A. 874).
The USPTO’s reasoning is internally inconsistent. If
each of the three sets of title, artist, and price information
constitutes one of the “lists of information,” it cannot also
be correct that the search results as a whole (i.e., “Mandy
More,” “I Wanna Be With You,” and “Now That’s What I
Call Music! 4”) constitute one of the lists. And, if each of
the three sets of title, artist, and price information consti-
tutes one of the lists of information, then each such list
corresponds only to a single item (i.e., the “particular
online video item,” J.A. 15, that is played when a user
clicks the “Listen!” link), rather than multiple “online
video items.” J.A. 15 (emphasis added).
For these reasons, the court concludes that no sub-
stantial evidence supports the PTAB’s conclusion that
Cook Figure 3B discloses “displaying . . . a first list of
information about online video items in a plurality of lists
of information about online video items.” J.A. 15 (empha-
sis added).
C. Lemay Waived its Arguments as to Dual Functionality
Although the term “dual functionality” does not ap-
pear anywhere in the Lemay application, claim 1 recites
the following two steps:
IN RE: LEMAY 13
[(1)] in response to detecting a tap gesture on a
first portion of a row in the first list of information
about online video items, wherein the row con-
tains information about a particular online video
item:
...
playing the particular online video item;
[(2)] in response to detecting a finger gesture on a
second portion of the row in the first list of infor-
mation about online video items, wherein the sec-
ond portion of the row is different from the first
portion of the row, displaying, on the touch screen
display of the portable electronic device, addition-
al information about the particular online video
item . . . .
J.A. 15 (emphases added). Lemay contends that these
limitations establish the dual functionality element,
which is illustrated in Figure 5A of the Lemay applica-
tion. Appellants’ Br. 28 (reproducing and annotating a
portion of J.A. 959 (Lemay application fig.5A)).
However, the court need not address these argu-
ments. Because Lemay did not raise this issue before the
PTAB, the PTAB did not make any findings on this issue.
The court cannot decide questions of fact in the first
instance when reviewing the PTAB’s decisions. There-
fore, Lemay’s arguments as to claim 1 are waived. See,
e.g., In re Suitco Surface, Inc., 603 F.3d 1255, 1261 (Fed.
Cir. 2010) (declining to consider new anticipation argu-
ment not raised before the PTAB); In re Watts, 354 F.3d
1362, 1367–68 (Fed. Cir. 2004) (holding patent holder
waived new argument on the scope of the prior art never
raised to the PTAB). Therefore, the court need not con-
sider whether Cook discloses the dual functionality ele-
ment of claim 1 of the Lemay application.
14 IN RE: LEMAY
III. No Substantial Evidence Supports the PTAB’s Obvi-
ousness Determination as to Claims 2–3, 5–8, 12–22, and
24–33
As to claims 2–3, 5–8, 12–22, and 24–33, 7 claim 1 is
representative. A claim is considered representative
when it is not separately argued before the PTAB, see 37
C.F.R. § 41.37(c)(1)(iv) (“For each ground of rejection
applying to two or more claims, the claims may be ar-
gued . . . as a group (all claims subject to the ground of
rejection rise and fall together) . . . .” (emphasis added)),
and claims that “are not separately argued . . . all stand
or fall together,” In re Kaslow, 707 F.2d 1366, 1376 (Fed.
Cir. 1983).
In their opening brief before the PTAB, Lemay
grouped claims 2–3, 5–8, 12–22, and 24–33 together and
presented arguments applicable to this group. See J.A.
711–20 (Appellants’ Brief to the PTAB); see also J.A. 760–
67 (Appellants’ Reply Brief to the PTAB grouping claims
in the same manner, with the exception of including claim
4 in the sections on claims 1–3, 5–8, 12–22, and 24–33).
As a result, the PTAB determined that “Appellants have
not presented separate patentability arguments for pend-
ing claims 2–3, 5–8, 12–22, and 24–33 or have reiterated
substantially the same patentability arguments as those
previously discussed for claim 1,” and thus sustained the
examiner’s rejection of these claims on the same grounds
as claim 1. J.A. 7 (citing 37 C.F.R. § 41.37(c)(1)(iv)).
In the present appeal, the parties continue to agree
that claim 1 is representative. See Appellants’ Br. 7 n.6
(“Because the parties and the PTAB treated claim 1 as a
representative claim, this brief does so as well.”); Appel-
7 Because the PTAB reversed the examiner’s rejec-
tions of claims 10 and 11, they are not at issue in this
appeal. See generally Appellants’ Br. 41–56.
IN RE: LEMAY 15
lee’s Br. 1, 3, 5, 18–19, 21, 40 (repeatedly referring to
“representative claim 1”). Therefore, claims 2–3, 5–8, 12–
22, and 24–33 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv); Kaslow, 707 F.2d at 1376. Because claim
1 would not have been obvious, we reverse as to claims 2–
3, 5–8, 12–22, and 24–33 as well.
IV. No Substantial Evidence Supports the PTAB’s Obvi-
ousness Determinations as to Depend-
ent Claims 4, 9, and 23
Lemay provided separate arguments for dependent
claims 4, 9, and 23 before the PTAB, see J.A. 720–22
(claims 4 and 9), 768–71 (claim 9), 773–74 (claim 23), and
the PTAB provided separate reasoning for its affirmance
of the examiner’s rejection of these claims, see J.A. 7–9.
Before this court, Lemay continues to separately argue
these claims. See Appellants’ Br. 48–54. However, the
court need not address these separate arguments because
these claims depend from nonobvious claims.
It is true that dependent claims may either stand or
fall when the associated independent claim is invalidated
as obvious. See 35 U.S.C. § 282(a) (“[D]ependent or mul-
tiple dependent claims shall be presumed valid even
though dependent upon an invalid claim.”); Scanner
Techs. Corp. v. ICOS Vision Sys. Corp. N.V., 528 F.3d
1365, 1383 (Fed. Cir. 2008) (noting the “black letter law
that a finding of invalidity of an independent claim does
not determine the validity of claims that depend from it”
(citation omitted)). But this does not mean that depend-
ent claims that are not themselves inherently nonobvious
may either stand or fall when, as here, the associated
independent claim is determined to be nonobvious. To the
contrary, “dependent claims are nonobvious if the inde-
pendent claims from which they depend are nonobvi-
ous . . . .” In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir.
1992); see Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc.,
520 F.3d 1358, 1365 (Fed. Cir. 2008) (“[I]f claim 1 is not
16 IN RE: LEMAY
obvious then claims 6–8 also cannot be obvious because
they all depend from a nonobvious claim.” (citation omit-
ted)); In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988)
(“Dependent claims are nonobvious under section 103 if
the independent claim from which they depend are non-
obvious.” (citations omitted)); Manual of Patent Examin-
ing Procedure § 2143.03 (9th ed. Rev. 7, Nov. 2015) (“If an
independent claim is nonobvious under 35 U.S.C. [§] 103,
then any claim depending therefrom is nonobvious.”
(citation omitted)).
Claims 4, 9, and 23 depend from claims that this court
determined to be nonobvious, i.e., claims 2 and 3. See J.A.
17 (where claims 4 and 9 depend from “[t]he method of
claim 2”), 19 (where claim 23 depends from “[t]he method
of claim 3”). Therefore, claims 4, 9, and 23 also are non-
obvious. See Ortho-McNeil, 520 F.3d at 1365.
CONCLUSION
We have considered the parties’ remaining arguments
and find them unpersuasive. For these reasons, the
decision of the United States Patent and Trademark
Office’s Patent Trial and Appeal Board is
REVERSED
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: STEPHEN O. LEMAY, MICHAEL MATAS,
TIMOTHY P. OMERNICK, RICHARD WILLIAMSON,
IMRAN CHAUDHRI, CHARLES J. PISULA,
MARCEL VAN OS,
Appellants
______________________
2015-1973
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in No.
11/968,067.
______________________
MOORE, Circuit Judge, dissenting.
The majority holds that the Patent Trial and Appeal
Board’s (“Board”) findings regarding the scope and con-
tent of the prior art are not supported by substantial
evidence and reverses the Board’s obviousness determina-
tion as to every disputed claim. I would affirm the
Board’s rejection of claims 1–8 and 12–33, but would
reverse on claim 9.
I. Claim 1
Respectfully, substantial evidence supports the
Board’s finding that Cook and Saarinen disclose the
disputed limitations of claim 1.
2 IN RE: LEMAY
The majority opinion concludes that there is not sub-
stantial evidence to support the Board’s finding that Cook
discloses an “icon” and “a corresponding list of infor-
mation.” See Majority Op. at 6–10. This implicates two of
the three limitations disputed by Lemay:
displaying, on the touch screen display of the
portable electronic device, a plurality of icons cor-
responding to at least some of the plurality of lists
of information about online video items;
...
in response to detecting a finger gesture on a re-
spective icon in the plurality of icons, displaying,
on the touch screen display of the portable elec-
tronic device, a corresponding list of information
about online video items.
J.A. 15–16 (emphases added).
For the first limitation, “a plurality of icons corre-
sponding to at least some of the plurality of lists of infor-
mation,” the examiner cited Cook’s disclosure at column 6
lines 33–39, which describes a search result display
depicted in Figure 3B of Cook. J.A. 626. For the second
limitation, displaying “a corresponding list of information”
after detecting “a finger gesture on a respective icon in
the plurality of icons,” the examiner cited a different
portion of Cook at column 8 lines 37–49, which describes
the branded player depicted in Figure 5 of Cook. J.A. 627.
The majority states, and I agree, that “a plurality of
icons” recited in the first limitation provides antecedent
basis for and thus must be the same as “the plurality of
icons” recited in the second limitation. Majority Op. at 9–
10. And I do not read the PTO’s brief to dispute this
issue. What the PTO does argue is that the first limita-
tion’s “plurality of lists of information” does not provide
antecedent basis for “a corresponding list of information.”
Appellee’s Br. 29–30. I agree and therefore cannot join
IN RE: LEMAY 3
the majority’s opinion holding that the Board’s findings
are not supported by substantial evidence because the
Board relies on “different lists” disclosed in Cook to satis-
fy each limitation. See Majority Op. at 10.
The first limitation recites “at least some of the plu-
rality of lists of information about online video items.”
The second limitation recites “a corresponding list of
information about online video items.” I cannot agree
with the majority that these must be the same lists of
information for three reasons. First, there is no anteced-
ent basis to support limiting “a corresponding list” to one
of the “plurality of lists.” Second, the limitations them-
selves use different words to describe the two different
lists of information. See CAE Screenplates Inc. v. Hein-
rich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed.
Cir. 2000) (holding there is a presumption that when
different words are used to describe different elements
they have different meanings). That both limitations
refer to lists of information “about online video items”
does not mean the limitations are referring to the same
lists. Finally, during prosecution, the PTO gives terms
their broadest reasonable construction. Viewing these
terms under the broadest reasonable interpretation, I
cannot say that “a corresponding list” must be identical to
“the plurality of lists.”
In short, the claim’s “plurality of lists of information
about online video items” is a different element from the
same claim’s “a corresponding list of information about
online video items.” The majority errs when it requires
them to be “the same list.” Majority Op. at 10. Under-
standing claim 1 in this way, I would hold there is sub-
stantial evidence to support the examiner’s finding,
adopted by the Board, that these limitations are disclosed
in Cook. See J.A. 626–27.
For similar reasons, I would also hold that substantial
evidence supports the Board’s finding that the third
4 IN RE: LEMAY
limitation, “a first list of information about online video
items in a plurality of lists of information about online
video items,” is disclosed in Cook. Under the broadest
reasonable interpretation, I think the majority is again
mistaken in requiring that “a first list of information” look
the same as “a plurality of lists of information.”
II. Claim 9
While I disagree with the majority regarding claim 1,
which is representative of claims 2–8 and 12–33, I would
not affirm the Board on claim 9. Claim 9 recites “a con-
figuration icon that when activated initiates the display of
a user interface for configuring which icons . . . are dis-
played with the first list of information.” J.A. 17. In its
rejection, the examiner cited Cook at column 8 lines 37–
60, which describes Cook’s branded player depicted in
Figure 5 and a “call-to-action” function. J.A. 629. The
Board adopted the examiner’s finding that “Cook de-
scribes editing operations for a playlist, as well as a
function with an interface that directs the user to take
actions.” J.A. 8. The portion of Cook disclosing customiz-
ing playlists does not involve customizing or configuring
the display of icons in any way. See J.A. 875 (Cook
at 8:37–49). Even if the “call-to-action” function could be
interpreted to reconfigure the display of media product
icons, as the PTO argues, Appellee’s Br. 54–55, this
function occurs within the branded player, apart from the
“icons . . . displayed with the first list of information.” See
J.A. 869 (Cook at Fig. 5); 875 (Cook at 8:50–60). Because
the Board’s finding that Cook discloses claim 9’s “a con-
figuration icon that when activated initiates the display of
a user interface for configuring [] icons” is not supported
by substantial evidence, I would reverse the Board’s
decision that claim 9 would have been obvious over Cook.